DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/22/2026 has been entered.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
Based on Applicant’s arguments submitted 1/22/2026, and the disclosure in the instant specification at Paragraph 0003, Examiner has withdrawn the 35 U.S.C. 101 rejection.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wormald (U.S. Pub No. 2010/0042911) in view of Bradley (U.S. Patent No. 11,580,565), and further in view of Tom (U.S. Pub No. 2013/0086607).
Regarding claims 1, 8, 15, Wormald teaches creating, at a server remote from the display device, a playlist of digital content to be output at a display, wherein the playlist of digital content includes a plurality of items of digital content (Paragraphs 0073-0074, advertising server can be a local server 298b or a remote server 298a); receiving data associated with the plurality of items of digital content from a second server associated with the display device (Paragraphs 0084-0085, filtering criteria is associated with the advertisements, this criteria is from the mobile device, which can be considered a “server” computer as it’s capable of running a local version of the advertising server); identifying one or more items of digital content from the plurality of items of digital content in the playlist of digital content based on data associated with the plurality of items of digital content (Paragraphs 0084-0085, identifying advertisements based on the filtering criteria); removing unidentified items of digital content from the plurality of items of digital content in the playlist of digital content, wherein the playlist of digital content excludes the unidentified items of digital content and keeps the one or more items of digital content in response to removing unidentified items of digital content from the play list of digital content (Paragraphs 0084-0085, “unidentified items” are those items that are not identified as meeting targeting requirements and thus filtered out or “removed”); and causing output of the playlist of digital content including the one or more items of digital content (Paragraph 0087).
Wormald does not appear to specify receiving a playlist and outputting a playlist at an energy-dispensing station. However, Bradley teaches receiving a playlist and outputting a playlist at an energy-dispensing station on both a consumer device (as taught by Wormald) or a gas pump (Column 9 Lines 15-28, energy-dispensing station). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to receive and output the advertising information in as many places as would be relevant, such as a gas pump, in order to extend the effectiveness of the advertising.
Wormald does not appear to specify transmitting, from the first server, reference data to the second server, wherein the reference data references the playlist of digital content including the one or more items of digital content and enables retrieval of the playlist from the first server; and responsive to the second server executing the reference data to create a request to retrieve the playlist from the first server, sending the playlist of digital content from the first server to the second server.. However, Tom teaches transmitting, from the first server, reference data to the second server, wherein the reference data references the playlist of digital content including the one or more items of digital content and enables retrieval of the playlist from the first server (Abstract, Paragraph 0015, ad identifiers represent a request to retrieve the ads, Paragraph 0060, “the client 502 may, at 514, request one or more ads for the break by signaling to the server 504. In response to receiving the request message 514, the server system 504 may, at 516, determine a selection of default advertising videos and ad breaks for the video segment requested by the request message”, one request message and the server determines multiple ads, the multiple ads represent a “playlist”); and responsive to the second server executing the reference data to create a request to retrieve the playlist from the first server, sending the playlist of digital content from the first server to the second server (Paragraphs 0015, 0059-0060, get request submitted by second device to the server including ad identifiers). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to use a GET request as taught by Tom since the claimed invention is merely a combination of old elements and the combination of each element merely would have performed the same function as it did separately and a person of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claims 2, 9, 16, Wormald teaches the data associated with the plurality of items of digital content includes user information indicating a relevance of the items of the digital content to a user (Paragraphs 0084-0085).
Regarding claims 3, 10, 17, Wormald teaches identifying the one or more digital content items relevant to the user based on the user information (Paragraphs 0084-0085).
Regarding claims 4, 11, 18, Wormald does not appear to specify receiving the data including the user information based on the user’s interaction at the energy-dispensing station. However, Bradley teaches receiving the data including the user information based on the user’s interaction at the energy-dispensing station (Column 5 Line 47 – Column 6 Line 3). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to receive the data including the user information based on the user’s interaction at the energy-dispensing station since the claimed invention is merely a combination of old elements and the combination of each element merely would have performed the same function as it did separately and a person of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claims 5, 12, 19, Wormald does not appear to specify the input associated with the plurality of items of digital content includes product information about products available at the energy-dispensing station. However, Bradley teaches the input associated with the plurality of items of digital content includes product information about products available at the energy-dispensing station (Column 5 Line 47 – Column 6 Line 3). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to use product information about products available at the energy-dispensing station since the claimed invention is merely a combination of old elements and the combination of each element merely would have performed the same function as it did separately and a person of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claims 6, 13, 20, Wormald does not appear to specify identifying the one or more digital content items relevant to the products available at the energy-dispensing station based on the product information. However, Bradley teaches identifying the one or more digital content items relevant to the products available at the energy-dispensing station based on the product information (). It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to use product information about products available at the energy-dispensing station since the claimed invention is merely a combination of old elements and the combination of each element merely would have performed the same function as it did separately and a person of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claims 7, 14, Wormald teaches the plurality of items of digital content includes advertising content (Paragraphs 0084-0085).
Response to Arguments
Applicant argues “These identifiers do not reference an entire playlist; rather, they identify individual advertisements that are mutually exclusive options for user selection-either a default advertisement or an alternative advertisement”, “this is not an automatic process”, “The client requests either the default ad or an alternative ad based on user choice-not both together as a playlist”, “Tom requires user input to trigger retrieval of an alternative advertisement”, “The alternative ad is only requested in response to user selection of the link”, “all identified items in the filtered playlist are retrieved together by the second server. In Tom, by contrast, only one advertisement-either the default or the alternative-is retrieved per ad slot based on user choice. Tom's system never retrieves an entire playlist of filtered content; it retrieves individual ads one at a time depending on whether the user elects to swap”, and “the claimed invention recites that the second server automatically executes the reference data to create a request-no user selection is required”. First of all, the claimed invention does not preclude a user selection. Just because the claims do not require a user selection does not mean that one cannot take place and still meet the claim language. Further, the words “automatic” or “automatically” appear nowhere in the claim language. While these words are not strictly limiting (any computer process, including the ones performed by Tom, may be taken to use automatic internal processing), the fact that they do not appear in the claim language makes Applicant’s arguments with regard to an “automatic process” moot. Further, Applicant claims that only a single advertisement is requested in the system of Tom. However, the claim language literally says that the playlist of digital content includes “one or more items of digital content”. This means that the playlist may be a playlist having one single advertisement. Even under Applicant’s interpretation, Tom meets this claim language. And finally, Paragraph 0015 of Tom states that “the method may include transmitting identifiers for the default and alternative video advertisements to a client device prior to occurrence of the ad break. The client device may use the ad identifiers to request the default and/or alternative video advertisements from the server for play in an upcoming ad break in the streaming session”. This teaches that the client device requests the default advertisements using the ad reference data, and the default advertisements are played without any user input. Paragraph 0060 then states “the client 502 may, at 514, request one or more ads for the break by signaling to the server 504. In response to receiving the request message 514, the server system 504 may, at 516, determine a selection of default advertising videos and ad breaks for the video segment requested by the request message”. The singular message sent by the client requests one or more ads (via identifiers, as specified by Paragraph 0015). The one or more ads are interpreted as a playlist of advertisements. Therefore, no matter how the Tom reference is interpreted (with the default advertising or the swapped advertising), the Tom reference still fully meets the required claim language.
Applicant argues “Wormald and Bradley operate on fundamentally different architectural principles than Tom” and “Combining these incompatible architectures would require fundamentally restructuring the automated playlist delivery systems of Wormald and Bradley to accommodate Tom's user-driven, interactive selection model”. However, all of the applied references are directed to delivery of advertising via network services. Further, the entire architecture of Tom is not being combined, but rather merely the aspects of transmitting reference data to request advertising and creating a request to retrieve the advertising. There is nothing that prevents this process from being integrated with the systems of Wormald and Bradley.
Applicant argues “there is no recognized need or motivation to combine Tom's teachings with Wormald and Bradley”. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Applicant argues “Tom explicitly discusses efficiency concerns with its approach that counsel against applying it to bulk playlist retrieval scenarios” and “Tom's approach is specifically designed for individual ad swapping scenario”. As explained above, however, the Tom reference still reads over the claimed subject matter without any need to bring in the ad swapping. Likewise, the claim language only requires a playlist of one ad, so this argument is unpersuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL BEKERMAN whose telephone number is (571)272-3256. The examiner can normally be reached 9PM-3PM EST M, T, TH, F.
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/MICHAEL BEKERMAN/Primary Examiner, Art Unit 3621
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